Pursuant to
Article 1.2 (Relation to Other Agreements), TPP obligations are to “coexist”
with “existing agreements.” Because the United States already has FTAs in
place with six of the other eleven TPP countries – Australia, Canada, Chile,
Mexico, Peru, and Singapore – it is important to read the TPP’s IP chapter in
light of the IP chapters in these prior agreements when seeking to evaluate the
scope of IP commitments between these countries and the United States. In
addition, the TPP IP chapter includes four country-specific annexes (related to
obligations for Chile, Malaysia, New Zealand, and Peru), two annexes clarifying
obligations related to Internet Service Providers, and thirteen separate side letters between
the United States and other negotiating partners. The IP chapter also
sets out transition periods for a number of countries to comply with certain IP
obligations.
IP Protections
Trademarks and
Geographical Indications
In general, TPP clarifies and
in some cases strengthens protections for brand owners. TPP provides
broad trademark protections, including for sounds, collective marks, and
certification marks, as well as specific procedural protections for trademark
owners. In addition, TPP requires Parties to provide for “appropriate
measures” to refuse or cancel trademark registrations if the use of that
trademark is likely to cause confusion with an identical or similar well-known
trademark.
With respect to domain names,
TPP goes beyond previous U.S. FTAs by: providing greater specificity on the
elements of an appropriate procedure to settle disputes; requiring that TPP
members provide online public access to databases concerning domain-name
registrants, consistent with “relevant administrator policies regarding
protection of privacy and personal data”; and requiring “appropriate remedies,”
at least in cases of cybersquatting with a bad faith intent to profit.
TPP also includes extensive
provisions to improve the current level of protections for the use of common
food names and to discourage the registration of inappropriate geographical
indications designations. There also are a number of side letters with
countries that may be considering new commitments related to geographical
indications in other trade agreements.
Patents
TPP affirms long-standing
international obligations to grant patents in all fields of technology for
inventions that are “new,” involve “an inventive step,” and are “capable of
industrial application.” Subject to certain exceptions, TPP clarifies
that Parties must also make patents available for “at least one of . . . new
uses of a known product, new methods of using a known product, or new processes
of using a known product.”
TPP also requires the Parties
to provide for patent term adjustment to compensate for “unreasonable delays”
in a Party’s issuance of patents. “Unreasonable delay” is defined to “at
least” include more than five years from patent application filing in the
territory of the Party or three years from a request for examination of the
application, whichever is later. As a point of comparison to other U.S.
trade agreements, the TPP rule is consistent with the U.S.-Chile FTA, while the
U.S.-Australia FTA defined “unreasonable delay” as a delay in grant of four
years after filing or two years from the request for examination.
Undisclosed Test
or Other Data
With respect to
pharmaceuticals, the Agreement requires that undisclosed test or other data
submitted for marketing approval of a new pharmaceutical product shall be
protected for “at least five years” from the date of such approval “in the
territory of the Party.” A “new pharmaceutical product” is defined as “a
pharmaceutical product that does not contain a chemical entity that has been
previously approved in that Party”.
TPP is also
the first U.S. trade agreement to include an explicit reference to protection
for biologics. In particular, the Agreement provides that a Party provide
“at least eight years” of protection “from the date of first marketing approval
of that product in that Party” or for a period of “at least five years from the
date of first marketing approval of that product in that Party”, and
“through other measures”, to “deliver a comparable outcome in the
market.” These provisions have been criticized as
falling short of the TPA requirement that IP provisions in U.S. trade
agreements reflect a “standard or protection similar to that found in United
States law.”
With respect to agricultural
chemical products, ten years of protection is provided. A “new
agricultural chemical product” is defined as “one that contains a chemical
entity that has not been previously approved in the territory of the Party for
use in an agricultural chemical product.”
Copyrights
TPP requires that Parties
provide a minimum term of protection for copyrighted works of
life-plus-70-years, with caveats for New Zealand (which is provided an eight
year transition period with certain exceptions) and Japan (pursuant to its side
letter with the United States). While this 70-year term is consistent
with some of the United States’ more recent FTAs, it goes beyond other
international agreements, including NAFTA. TPP also mandates that Parties
adopt or maintain laws requiring central governments to use only non-infringing
software.
As in
previous agreements, TPP affirms the internationally-recognized “3-step test”
for copyright exceptions and limitations. The TPP also includes a
provision, based on a 2012 USTR proposal, stating
that the Parties “shall endeavor to achieve an appropriate balance” in
copyright, “giving due consideration to legitimate purposes such as, but not
limited to: criticism; comment; news reporting; teaching, scholarship,
research, and other similar purposes”. TPP further explains that “[f]or
greater certainty, a use that has commercial aspects may in appropriate
circumstances be considered to have a legitimate purpose.”
Consistent with prior U.S.
FTAs, the TPP’s provisions on technological protection measures (TPMs) require
TPP members to provide measures that prevent circumvention of TPMs while
permitting exceptions in order to enable non-infringing uses. In
addition, similar to prior U.S. trade agreements and consistent with the U.S.
Copyright Act, TPP includes detailed provisions related to limitations on
Internet Service Provider (ISP) liability while also seeking to address online
copyright infringements effectively. TPP expressly provides that
eligibility for these liability limitations “shall not be conditioned on the
[ISP] monitoring its service or affirmatively seeking facts” of
infringement. Several annexes relating to these provisions, however,
provide certain clarifications relating to the application of the TPP rules in
certain countries.
Trade Secrets
TPP provides the most robust
trade secret protections of any U.S. FTA, including by providing protections
against unauthorized disclosures to or by “state-owned enterprises.” It
is also the first such agreement to require criminal penalties for trade secret
theft, including cyber-theft. However, the Agreement also allows Parties
significant latitude to impose limitations on the availability of such
remedies.
IP Enforcement
Building upon the IP
enforcement commitments in the WTO Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS) and later agreements, TPP requires member
countries to provide a range of IP enforcement mechanisms, including civil and
administrative procedures and remedies, provisional measures, border measures,
and criminal procedures and penalties. Obligations of note include:
Criminal seizure
authority: TPP permits seizure not only of
infringing products but also of “assets derived from, or obtained through, the
alleged infringing activity”.
Statutory and
additional damages: TPP requires parties
to provide pre-established and/or “additional” damages” for copyright
infringements and trademark counterfeiting. This commitment goes beyond
some of the United States’ older trade agreements, including NAFTA, and TRIPS.
Ex officio border
measures: TPP Parties are required
to allow the initiation of border measures ex officio with
respect to suspected counterfeit trademark or confusingly similar trademark or
pirated copyright goods that are imported, destined for export, or in
transit. In the alternative, with respect to goods in transit, the
Agreement provides that Parties shall “endeavour to provide” … available
information regarding goods “transhipped through its territory and
destined for the territory of the other Party, to inform that other Party’s
efforts to identify suspect goods upon arrival in its territory.”
Enforcement in the
digital environment: TPP is also the first
U.S. FTA to clarify that most of these enforcement measures (except for border
measures) are available “in the digital environment.”
Criminal penalties: TPP
makes criminal penalties mandatory for infringements that are done “willfully
and for purposes of commercial advantage or financial gain.” TPP is also
only the second U.S. FTA to include obligations related to unauthorized
camcording in theaters, by requiring that “each Party shall adopt or maintain
measures, which shall at a minimum include, but need not be limited to,
appropriate criminal procedures and penalties.” Similar to other U.S.
FTAs, TPP requires criminal and civil penalties against the interception of
encrypted program-carrying satellite signals, as well as against the
manufacture or distribution of equipment for that purpose. TPP goes
beyond existing FTAs with TPP parties by also providing for criminal or civil
penalties against the interception of encrypted program-carrying cable signals,
as well as against the manufacture or distribution of equipment for that
purpose.
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